Goodbye DD

USPTO Kills off Disclosure Document Program

As of February 1 of 2007 the USPTO terminated the Disclosure Document Program (DDP) in which, for $10, an inventor could send in to the USPTO a written description, and optionally drawings, of their invention "idea." There were no formal requirements for the document but a couple of clear statements and warnings were nicely provided on the USPTO's cover letter form. The plan was that the document would provide some unbiased evidence for near the inventors approximate date of conception. The document would be only held for two years then destroyed if not referenced in a full patent application within that time frame. I've always strongly encouraged its use and that whatever the inventor file be as thorough and enabling as they can make it. Alas, it is no more, inventors must rely on either carefully maintained and witnessed log books or on a $100 Provisional Application for Patent filing.

Below are the arguments I presented to the USPTO against dropping of the program:

To whom it may concern:

I am strongly in favor of continuation of the USPTO Disclosure Document Program for the following reasons:

1. It is a good "get the feet wet" learning tool for budding inventors or those who finally think "now is the time to do something with one of my ideas." I strongly encourage new inventors to sit down and do the writing because I know that just the act of putting something onto paper will help them see whether they actually have an invention or not. The lack of "formal" requirements makes it possible for them to do (though I have heard patent practitioners WARN of all the possible pitfalls of "amateur" legal document writing).

2. A reasonably well prepared DDP filing will beat the stuffings out of the average budding inventor "notebook" for documentation that would be considered useful "evidence" in court. Most of the "notebooks" that I have seen are so haphazardly done--often even by more experienced inventors--that even a half-decent DDP filing will be a better record.

3. The DDP with it's two year time frame (though it's actually only 1 when you insert the PAP 1 year before non-provisional filing) gives budding inventors a tremendously beneficial "cooling off period" without the pressure of a "patent pending." It does not surprise me that the vast majority of DDs never get referenced in a full application---they are and should be wisely abandoned after a little research. If inventors are forced to go the PAP route there will be at least two additional forces that lead too many of them to waste more money on a full filing, A) they've committed $100, "real money," (instead of $10 "pocket change") which they are more loath to "lose" by not following up and B) there is a prideful tendency to "announce" the "patent pending" status of a PAP and thus a real psychological barrier to overcome to decide to abandon the PAP (and the potential "glory" of an issued patent). Virtually all of the new inventors I meet will give up the $10 without a second thought while only a few will have the fortitude to abandon a $100 "patent pending" PAP.

4. I hear too many budding inventors complain that they got "rushed" into the PAP filing by a practitioner---who, of course, and accurately, said the PAP for only $90 more is "safest" for "protecting" an invention idea---then got the thumb screws put to them---by the highly moral practitioner---some 9-10 months later to get that PAP followed up by a "legal language t-crossing-i-dotting" practitioner-written full application. The reality is the $100 DOES NOT usually constitute the "safest" route. The risk is losing out on the invention idea to someone else---pretty much always very near 0---is generally very small versus losing out on the $100 and subsequently $3,000 to $10,000 (plus or minus) to get a ridiculously weak and worthless patent on something for which the basic idea was had long ago.

I have heard (and I'm not privy to the inner minds of the DDP creators) that the sole benefit the DDP was created for is as proof of a date near the date of conception. Further that a filed DD cannot be or become evidence of "reduction to practice." I don't buy either of those. See above points 1, 2,and 3 to refute the "sole" benefit argument. What the creators might, or might not, have intended seems irrelevant to what the actual benefits are. As to the latter argument while it is true that filing a PAP or a full application---in black letter law---give one constructive "reduction to practice" there is always far more to the law than just the statute books. For various purposes other documents, actions, etc., have over the years by the courts been used to decide that an inventor was in full "possession" of the invention or had "completed" it without either actual or black-letter-law-constructive reduction to practice (See Mahurkar v. C.R.Bard, Inc. as an introduction to the topic). I have no doubt that, when fairness demands it, some DD will meet that test too. Not all, of course could or should count as more than evidence of conception but there is no bright line that says a DD never can count for more.

Sincerely,

James E. White

Goodbye DDP, the PTO "Rationale"

Now I'll expose some of the PTO "rationale" for dropping the Disclosure Document Program. It is a very long rationale so it will not all appear here (I do hope to get around to adding a few more comments though). It is available at "Changes To Eliminate the Disclosure Document Program." I will only note a couple of items but I strongly encourage you to read the whole thing and compare it with my above points. Beware, this is government reasoning at it's finest. They also completely ignore the most important points re "inventors" by categorizing him/her as just another "small entity," i.e., an organization of less than 500 employees. I also strongly suggest you review other peoples' comments and decide for yourself if the government actually addressed all the issues.

The first 2 "comments" as paraphrased by the USPTO, their "response" and Jim's Notes include the full USPTO statement but after that I'll just hit a couple of points.

Response: The Office is in this final rule proceeding with the elimination of the Disclosure Document Program.

Jim's Notes: Surprise! Of course they don't say how few support-for-elimination comments they got or who they might be from ("clubs" of attorneys and attorneys themselves). Read them yourself.

Comment 2: Several comments suggested it was in the best interest of independent inventors to spend $10.00 for a disclosure document filing rather than spending $100.00 for a provisional application filing, and that only large entities could afford the provisional application filing fee. Another comment argued that independent inventors do not have the funds to pay an attorney to file a provisional application.

Response: It is inappropriate to just compare fees. The benefits of a provisional application are far greater than any benefit provided by a disclosure document. The majority of provisional applications filed since fiscal year 2002 are by small entity applicants, which does not support the position that small entities cannot afford the provisional application filing fee or the costs involved in preparing a provisional application.

Jim's Notes: Did the response even address the points presented? Who, exactly, was "just comparing fees"? NOBODY! Also note that "small entity" means firms up to 500 employees---firms from 10 (probably less) to 500 employees are hardly the folks who would, AND DID, benefit from the DDP and it's lower fee. Also note that the USPTO makes a bald faced "benefits...far greater..." with no support whatsoever and no counter-points whatsoever. (Does this look like a railroad job?)

Comment 6: One comment argued that the Office assertions that "few, if any, inventors obtain any actual benefit from a disclosure document, and some...

Response: The Office issued over three million patents since 1976, and of these three million patents only 1,330 (0.04 %) reference a disclosure document. ...while the Office receives a large number of disclosure documents, there are relatively few instances in which a disclosure document is referenced in a subsequent patent. Thus, the Office maintains that few, if any, inventors obtain any actual benefit from a disclosure document (i.e., through the filing of a subsequent patent application).

Jim's Notes: Note the PTO's assumption that the only possible benefit of a DDP is referencing it in a patent application. See my above points again.

But study the comments and responses in the official "rationale" as hard as you want and the ELEPHANT issue (at least in my always humble opinion:-) appears nowhere. That issue, how so many of the honest and trustworthy patent practitioners of high moral standards somehow manage to (probably wholly accidentally) make it appear to inventors that THE ONE YEAR EXPIRATION DEADLINE OF YOUR PAP (what the PTO and practitioners recommend in place of the DDP) IS APPROACHING----IT IS ****IMPERATIVE**** THAT YOU GET YOUR FULL APPLICATION IN ON TIME!!! Which, of course, often is not true at all and is rarely an ECONOMICALLY INTELLIGENT BUSINESS DECISION. That kind of pressure just could not be applied to $10 DDP filings----and now DDPs aren't an option. You lose.